Making changes to the application for a trademark – what can be changed after filing it

The provision of the state service for the registration of a trademark consists of the set of the administrative procedures, which includes: the acceptance and the registration of a submission, the check of the documents received as to completeness and correctness, the examination of the designation claimed for the compliance with the requirements of the Russian legislation, as well as the registration of the means of individualization or a refusal to do it.

During the development of a designation, as well as during the subsequent preparation of the submission for the registration of the trademark, the right holder should pay maximum attention to filling in the documents and to the accuracy of the information being indicated, as well as to the description of the trademark. However, there are quite often the circumstances in practice that the changes should be made to the application that is already filed.

The legal regulation of the order, the scope and the nature of the changes is contained in Article 1497 of the Civil Code of the Russian Federation. The legislator outlines the period of time, when it is permissible to make changes: from the beginning of carrying out the examination till making a decision on the state registration of the trademark or the decision on the refusal to do it.

In addition, Paragraph 2 of Article 1500 of the Civil Code of the Russian Federation stipulates the possibility of changing the documents of the application at the step of considering the objections against the refusal to register the trademark, provided that such changes: “...eliminate the reasons that have served as the only grounds for the refusal in the state registration of the trademark, and making such changes allows making the decision on the state registration of the trademark.”

The applicant shall be entitled to address Rospatent with a request for making changes by filing the relevant request, as well as by filing supplementary materials.

An initiative to make changes may come from both the applicant, for example, in the case of the change of the personal information, and from the specialists of the Patent Office, when during the examination it becomes clear that the designation is protectable only regarding the part of the claimed products. At the same time, the right to make the final decision always remains with the applicant.

The submission containing the request for making changes may be submitted to Rospatent:

• by addressing personally directly to the secretariat of the Patent Office;
• by post;
• by Fax with the subsequent submission of the original documents;
• via the official website of Rospatent;
• by filing the electronic application using the Federal State Information System – the Integrated Portal for Sate Services.

The requests shall be filed in a simple written form; the deviations from the approved samples shall be permitted, add this cannot serve as the grounds for the refusal to accept the documents. However, it is easier and more correct to use the established samples of the applications that are published on the Rospatent website. According to the nature of the changes, it is possible to distinguish: additions, clarifications or corrections. The applicant must submit the documents confirming the changes that he asks to make, as well as he must pay a state fee in the established amount.

The following amounts of the payment for the services are indicated at the Rospatent website as of August 2020:

• “The consideration of the request for making changes to the application for a trademark, making the decision based on the results of its consideration, if the change of the list is related to the inclusion of the additional class distinguished from the claimed list of the products and services – 5,000 roubles.
• The consideration of the request for making changes to the application for a trademark, making the decision based on the results of its consideration, if the change of the information on the applicant is related to the transfer of the right to the registration of the trademark to another person – 2,800 roubles.”[1]

Thus, it can be concluded that the payment of the state fee for making changes is necessary only in the case of making changes related to the inclusion of the classes of the products or the transfer of the rights to another person.

 After the application is received by the Patent Office, it shall be considered by the specialists, who make subsequently the decision to accept the request and making changes, or to refuse to accept the request and to make changes.

Depending on the direction, the changes being made can be classified based on the following grounds: 

1. The conversions that relate to the information on the applicant. These may include:

• The changes to the application regarding the information on the applicant due to the change in a company name (the person’s name) or a location (the place of residence).
• The amendments regarding the information on the applicant in the case of the transfer of the right to the registration of the trademark.
• The replacement of the data in connection with the reorganization of the applicant – the legal entity or in the case of the transfer of the right to the registration of the trademark without an agreement.

2. The corrections that relate to the “technical” part of the application.

• The correction of the obvious and technical errors in the documents.
• The clarification of an address for correspondence.

3. The changes that relate to the designation or the scope of legal protection.

• The change in the image of the claimed trademark.
• The correction of the list of the products, for which the registration of the means of individualization is requested.

The legislator lodges strict requirements for the changes of the designation and the classes of the products:

• It is permitted to make changes to the claimed trademark, if they relate to the individual elements of the subject matter and if they do not change it essentially.
• It is allowed to make changes to the list of the products, for which it is planned to use the mark, if they are aimed at narrowing it.

The failure to comply with the above requirements leads to the refusal to make changes and, in some cases, to the need to file new applications. Such assertion confirms the provision of Paragraph 2 of Article 1497 of the Civil Code of the Russian Federation, which states: “...If the supplementary materials contain the list of the products that are not indicated in the application at its filing date or the claimed designation of the trademark is changed essentially, such supplementary materials shall not be accepted for consideration. They may be executed and filed by the applicant as an independent application.”

 Summarizing the above, the following can be noted:

• The applicant is entitled to file the request for making changes during the period from the beginning of the examination till making the decision to register or to refuse to do it.
• The changes may relate to the information on the applicant, the correction of the inaccuracies and errors, and directly to the designation and the scope of protection.
• In the latter case, the legislator lodges a number of the additional requirements, the failure to comply with which leads to the refusal in making changes.
• It is also permitted to change the application at the step of the consideration of the objection against the refusal to register the trademark, if such changes allow eliminating the only reason for the made negative decision and to register the trademark.